Search and Examination: Upcoming Changes at the European Patent Office

This article was included in our Winter 2009/10 edition of Inside IP magazine.

As reported previously, new provisions regarding search and examination reports issued on European patent applications will come into force on 1 April 2010.  Some of the changes are such that applications will be deemed withdrawn if applicants do not alter their behaviour – applicants will need to become more proactive.  A notice issued by the European Patent Office (EPO) on 15 October 2009 provided some understanding of the rationale for the changes, and gave an increased understanding of what applicants can expect under the new rules.  This article provides a summary of the changes, and highlights areas in which applicants will need to change the way in which European patent applications are handled.

The new and amended rules are a mixed bag, but most favour the EPO and/or third parties and limit the options available to applicants.  Most of the changes will apply to some European applications but not to others, and the different ways in which different cases need to behandled in view of the changes is not always logical.  In the following, the rule changes with the greatest impact are discussed first.

Compulsory Response to Extended European Search Report (New Rule 70a)

The EPO currently drafts an opinion on patentability to accompany Search Reports issued on direct European applications, and on International applications that subsequently enter the European phase and for which a Supplementary Search Report must be drawn up (i.e. where the EPO was not the International Search Authority (ISA)).  The (Supplementary) Search Report and the Search Opinion are collectively referred to as the Extended European Search Report.

Currently, an applicant is not obliged to reply to the Search Opinion, and if no response is filed, the first examination report merely refers to the deficiencies raised in the Search Opinion.

Under new Rule 70a, the applicant will be obliged to respond to the Search Opinion if it is negative, i.e. if it raises objections to the application.

For most direct European applications, the deadline for responding to a negative Search Opinion will be the deadline for requesting examination, i.e. six months from publication of the Search Report.  This deadline will be mentioned in the EPO’s Communication notifying the applicant of the publication of the Search Report.  For direct European applications where the examination fee has already been paid, a response will be required within six months from publication of the Search Report.

For Euro-PCT applications for which a Supplementary Search Report is drawn up, the deadline for responding to a negative Search Opinion will be six months from the despatch of theSupplementary Search Report.

The application will be deemed to be withdrawn if no response is filed, although further processing is available.  Applicants are thus encouraged by new Rule 70a to deal with issues raised by the EPO by filing arguments and/or amendments at a relatively early stage in the procedure.  Since there is an official fee (currently €210) for further processing and since this will extend the deadline by only about three months, it may be that the EPO expects further processing to be used infrequently, but in practice it may be used extensively until applicants become used to the new rule regime.

Compulsory Response Following Entry to the European Regional Phase (Amended Rule 161)

Currently, the EPO issues a Communication under Rule 161 shortly after entry of an International application into the European phase, and offers the applicant an opportunity to amend the application within one month.  The claims on file after this time limit expires are the claims on which the Supplementary Search

Report is based or, if the EPO was the ISA, the first examination report is based.  The applicant is not currently obliged to reply to the Rule 161 Communication.

Under amended Rule 161, where the EPO is the ISA and issues an International Preliminary Report on Patentability (IPRP), and, where applicable, acted as the International Preliminary Examination Authority (IPEA), and so issued an International Preliminary

Examination Report (IPER), the applicant will be required to address (by amendment and/or comment) any deficiencies raised in the IPRP or the IPER within one month from the Rule 161 Communication.

Amendments or comments filed upon entry of the application into the European phase, or filed in the International phase under Article 19 PCT and maintained on entry into the European phase, will be deemed to be a relevant response, unless they have been taken into account by the EPO when drawing up the IPER.

The application will be deemed to be withdrawn if no response is filed, although further processing is available.

Thus, for applications where the EPO was the ISA, Rule 161 will require a response to the objections raised during the International phase at quite an early stage in the European procedure, and within a very short time from issue of the EPO Communication.

For Euro-PCT applications where the EPO was not the ISA, the situation remains unchanged, i.e. the applicant will receive a Rule 161 Communication from the EPO which provides an opportunity to file amendments to the application within a time limit of one month.  Although response to the Communication is not compulsory, a response will be required within six months of the issue of a negative Supplementary Search Report (as discussed above).

Changes to Amendment Procedure (Amended Rule 137)

Under Article 123(1) EPC, the applicant must be given at least one opportunity to amend an application of his own volition.  Details of how this requirement is fulfilled are set out in Rule 137 EPC, which currently stipulates that the applicant may amend the application of his own volition freely after receipt of the Search Report, and once when responding to the first Examination Report from the EPO.

Under amended Rule 137, an applicant will only be able to amend the description, claims and drawings of his own volition when responding to the Search Opinion, although in the case of Euro-PCT applications there is an opportunity to amend when responding to the Rule 161 Communication.  The relevant deadlines are discussed above.

There is one exception: in the situation that the applicant has paid the examination fee early and waived the right to receive a ‘proceed further’ notification, no Search Opinion is issued.  Here, a first Examination Report is issued by the EPO immediately after despatch of the Search Report and the applicant may make voluntary amendments to the application when responding to the first Examination Report.

As discussed above, a response to the Search Opinion under Rule 70a or in response to a Rule 161 Communication is only compulsory where the Opinion or Communication is negative.  However, the deadlines set out above apply where an applicant wishes to make voluntary amendments, even where there are no objections.

Amendments will not be able to be made as of right at any other stage in the application procedure.  Instead, the discretion of the EPO will be required before amendments can be entered.  It will therefore be advisable to make desired amendments earlier in the application process.

Multiple Claims in one Category (New Rule 62a)

The EPC provides that, with some exceptions, a European patent application may only contain one independent claim per category (product, process, apparatus or use; Rule 43 EPC).  At present, provided there is unity of invention, all claims are usually searched by the EPO, even if there are multiple claims in the same category, and an objection under Rule 43 is raised during examination.

One of the more draconian new rules is Rule 62a, under which the applicant will be invited, where the EPO considers that the application contains more than one independent claim in a category, to identify, within a period of two months, one independent claim from each category to be searched.  This two-month deadline cannot be extended using further processing, and if the applicant fails to respond in time, the search shall be carried out on the basis of the first claim in each category.  There is no provision for paying additional search fees, and no provision for amending the claims.  However, the recent notice from the EPO has clarified that an objection under this rule may be challenged either in reply to the EPO communication or later during examination.

Kate McNamara 05 Nov 2009

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